Appeal No. 1998-0659
Application No. 08/264,527
the pertinent art of Matsushima. Then the Examiner finds that
it would have been obvious to a person having ordinary skill
in the art, at the time the invention was made, to combine the
teachings of these two references for the purpose of
modulating the conduction frequency with the stimulus
frequency of Matsushima in order to make the present
invention.
As regards to claim 12, we find that the Examiner has
failed to set forth a prima facie case. As we stated above,
it is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a prior art reference or shown to be common
knowledge of unquestionable demonstration.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
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